Juniper Networks, Inc. v. Darshan Parmar / Juniper Technologies
Claim Number: FA1611001703133
Complainant is Juniper Networks, Inc. (“Complainant”), represented by Julia Anne Matheson of Finnegan, Henderson, Farabow, Garrett & Dunner, L.L.P., District of Columbia, USA. Respondent is Darshan Parmar / Juniper Technologies (“Respondent”), India.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <juniperwebs.com>, registered with GoDaddy.com, LLC.
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Petter Rindforth as Panelist.
Complainant submitted a Complaint to the Forum electronically on November 16, 2016; the Forum received payment on November 16, 2016.
On November 16, 2016, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <juniperwebs.com> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, LLC registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").
On November 17, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 7, 2016 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent's registration as technical, administrative, and billing contacts, and to postmaster@juniperwebs.com. Also on November 17, 2016, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent's registration as technical, administrative and billing contacts.
A timely Response was received and determined to be complete on December 7, 2016.
A timely Additional Submission was received from Complainant and determined to be complete on December 9, 2016.
A timely Additional Submission was received from Respondent and determined to be complete on December 14, 2016.
On December 12, 2016, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Petter Rindforth as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant has rights in the JUNIPER trademark through its registrations with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 4,122,106, registered on April 3, 2012) and with the Trade Marks Registry of India (Reg. No. 1,929,329, registered on February 25, 2012). Respondent’s <juniperwebs.com> domain name is confusingly similar to the JUNIPER trademark because it contains the trademark along with the generic or related term “webs” and the generic top-level domain (“gTLD”) “.com.”
Respondent is not commonly known by the <juniperwebs.com> domain name despite evidence to suggest as much because there is no such evidence prior to the domain name registration and because Respondent has not been authorized to use the JUNIPER trademark. Respondent fails to provide a bona fide offering of goods or services or a legitimate noncommercial or fair use because the resolving website is used to compete with Complainant.
Respondent uses the <juniperwebs.com> domain name in bad faith because the resolving website is used to compete with Complainant in a manner that is disruptive and done for the purpose of profiting from the creation of confusion regarding Complainant’s association with the domain name. Respondent registered the <juniperwebs.com> domain name in bad faith because it did so while it undoubtedly knew of Complainant’s rights in the JUNIPER trademark.
B. Respondent
The <juniperwebs.com> domain name is not confusingly similar to the JUNIPER trademark because while Complainant and Respondent have coincidentally similar names, they operate in different parts of the world and provide different services.
Respondent has been operating a business under the name “Juniper Technologies Pvt Ltd,” registered in India, since 2015. Respondent uses the <juniperwebs.com> domain name to provide web design services which do not compete with Complainant’s networking services on a website that is entirely distinct from that of Complainant. The term “Juniper” is a generic term associated with “knowledge” in Hindu mythology such that Respondent may have rights or legitimate interests in the <juniperwebs.com> domain name.
C. Additional Submissions
Complainant alleges in its Additional Submission:
1. Respondent does not dispute Complainant's long-standing trademark rights in the United States.
2. Respondent's arguments that no none in India knows of the existence of Complainant's trademark rights are incorrect.
3. Policy 4(a)(i) does not require that a complainant assert trademark rights in the specific jurisdiction where a respondent is located.
4. Respondent ignores completely the fact that the Complainant not only has trademark rights in India, but a substantial market presence there as well.
5. The differences between Respondent’s and Complainant’s respective websites have no bearing on whether the disputed domain name is confusingly similar to the JUNIPER trademark.
6. Respondent does not use <juniperwebs.com> in a descriptive way, related to plants or knowledge in Hindu mythology or otherwise, but rather for a website that offers services related to those offered by Complainant under the JUNIPER trademark.
7. Respondent cannot claim rights to the disputed domain name based on his Indian business registration, as Respondent’s business registration was filed over a year after the domain name was registered.
8. The link between plants/general knowledge on the one hand and Respondent’s use of the term for a web design company on the other, is not obvious, and Respondent offers no evidence supporting his “innocent” explanation for the disputed domain name's origin.
9. Respondent continued to use the name “Juniper” in a domain name, company name, and website even after the Indian Registrar for Trade Marks based his objection to Respondent’s trademark application on Complainant’s four separate JUNIPER trademarks on file in India, which supports the inference that Respondent did not chose the domain name innocently, but rather intending to capitalize on the goodwill associated with Complainant's trademark/s.
10. Respondent has not satisfied the requirements for a finding of reverse domain name hijacking as Complainant has made a prima facie case for Respondent’s bad faith registration and use of <juniperwebs.com>.
Respondent alleges in its Additional Submission:
1. Respondent started its business approximately 5 years ago, and named it “Juniper Webs and Technologies” after a plant which represents knowledge.
2. In 2015, the company name was registered as a PVT LTD.
3. Respondent's customers and associated people recognize Respondent with the name of “Juniper Technologies”, and it has taken a huge amount of hard work to build a reputation in the market of web designing.
4. Respondent has no bad faith intention, and it is merely a coincidence that the names of both companies are the same.
5. Respondent is commonly known by the disputed domain name, as 1) the Respondent registered the domain name <<juniper.org.in>> on November 26, 2012, but then changed it in favour of the more sought-after .com address, 2) in 2012 and 2013, Respondent uploaded some videos on YouTube, introducing Respondent's webs and technologies, 3) there is also a Google Plus Profile from 2013.
6. Respondent named his business after the Juniper plant, meaning "knowledge" in Hindy Mythology and therefore closely related to the IT industry, where "knowledge" is the only currency.
7. Respondent has filed a trademark application for JUNIPER TECHNOLOGIES (fig), and is still planning to file a response to the office action.
8. Respondent claims that continuous use, even after Complainant had opposed Respondent's trademark application and use, is not to be seen as bad faith.
9. Respondent claim that the disputed domain name differs enough from Complainant's trademark, and that the logo, connected web site and services are totally different from Complainant's trademark and services.
Complainant is the owner of the U.S. trademark registrations U.S. No. 4,122,106 JUNIPER, registered April 3, 2012, covering goods and services in classes 9, 37 and 42; and U.S. No. 4,118,939 JUNIPER NETWORKS, registered March 27, 2012, covering goods and services in classes 9, 37, 41 and 42.
Complainant is also the owner of the following Indian national trademark registration:
No. 1,929,329 JUNIPER, filed on March 2, 2010, and registered on February 25, 2012, covering goods and services in classes 9, 37, 41 and 42.
Respondent registered the <juniperwebs.com> domain name on February 18, 2014.
Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
Complainant claims rights in the JUNIPER trademark through its registrations with the USPTO (Reg. No. 4,122,106, registered on April 3, 2012) and with the Trade Marks Registry of India (Reg. No. 1,929,329, registered on February 25, 2012), which it uses for computer hardware and software related to interconnecting, establishing, managing, securing, monitoring, controlling, operating, and accessing area networks. The Panel therefore finds that Complainant holds rights in the JUNIPER trademark. See Morgan Stanley v. Fitz-James, FA 571918 (Forum Nov. 29, 2005) (finding from a preponderance of the evidence that the complainant had registered its mark with national trademark authorities, the Panel determined that “such registrations present a prima facie case of Complainant’s rights in the mark for purposes of Policy ¶ 4(a)(i).").
Complainant alleges that Respondent’s <juniperwebs.com> domain name is confusingly similar to the JUNIPER trademark because it contains the trademark JUNIPER along with the term “webs” and the gTLD “.com.”
The relevant part of the disputed domain names is “juniperwebs”. The addition of the generic Top-Level Domain “.com” is insufficient to distinguish the disputed domain names from Complainants’ trademark.
The "webs" word/part in “juniperwebs” is inconsequential as either a generic term or a term related to Complainant’s services through its association with computer services. See Microsoft Corporation v. Thong Tran Thanh, FA 1653187 (Forum Jan. 21, 2016) (determining that confusing similarity exist where [a disputed domain name] contains Complainant’s entire mark and differs only by the addition of a generic or descriptive phrase and top-level domain, the differences between the domain name and its contained trademark are insufficient to differentiate one from the other for the purposes of the Policy.).
The Panel therefore concludes that <juniperwebs.com> is confusingly similar to Complainants’ trademark JUNIPER.
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm't Commentaries, FA 741828 (Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name).
Complainant contends that Respondent is not commonly known by the <juniperwebs.com> domain name despite evidence to suggest as much because there is no such evidence prior to the domain name registration and because Respondent has not been authorized to use the JUNIPER trademark.
Complainant notes that the available WHOIS information indicates that “Juniper Technologies” is listed as the Registrant Organization and that Respondent is registered to do business in India as “Juniper Technologies Private Limited”.
Complainant has also provided information related to Respondent’s attempt to register “Juniper Technologies” as a trade mark in India in 2014 and that such was denied because of the mark’s similarity to Complainant’s JUNIPER trademark.
Respondent maintains that it has been operating a business under the name “Juniper Technologies Pvt Ltd,” registered in India, since 2015.
Respondent urges that it uses the <juniperwebs.com> domain name to provide web design services which do not compete with Complainant’s networking services on a website that is entirely distinct from that of Complainant.
The Panel notes that complainant's trademark JUNIPER is well-known in respect of certain Internet related services.
The Panel has deeply considered Respondent's arguments that <juniperwebs.com> is not confusingly similar to the JUNIPER trademark because Complainant and Respondent operate in different parts of the world and provide different services.
However, the Panel is not convinced by Respondent's arguments and explanations of the reasons of registering and using <juniperwebs.com>.
While it is not perfectly clear on which date Complainant and the trademark JUNIPER became known in India, it is clear that Complainant's Indian national trademark application was filed on March 2, 2010, and registered on February 25, 2012. The business of Complainant and Respondent are, although not identical, closely related. Thus, the Panel concludes that Respondent had knowledge of Complainant's trademark JUNIPER at the time of starting his own related business. Respondent's own information about his initial domain name registration of the nearly identical domain name <juniper.org.in> is a clear indication of that.
Registering and using a domain name that is obviously confusingly similar to another's well-known trademark, for similar services, can only be considered as an attempt to unfair use of the reputation of the prior trade mark. Such registration and use gives no rights or legitimate interest. See General Motors LLC v. MIKE LEE, FA 1659965 (Forum March 10, 2016) (finding that "use of a domain to sell products and/or services that compete directly with a complainant's business does not constitute a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).").
The Panel concludes that Respondent has no rights or legitimate interests in <juniperwebs.com>.
Complainant claims that Respondent has demonstrated a pattern of bad faith registration and use of domain names by registering multiple domain names related to Complainant’s JUNIPER mark. Complainant has provided WHOIS information related to the <jnpr.in>, <juniper.today>, <juniperapps.com>, and <junipercrm.com> domain names. Although these domain names are not part of this case, the Panel notes that all are registered after the date of registration for the Complainant's Indian national trademark, and that at least some of them clearly are created with Complainant's trademark JUNIPER, alone or with the addition of a descriptive word or abbreviation related to the business of both Complainant and Respondent.
Complainant contends that Respondent uses the <juniperwebs.com> domain name in bad faith because the resolving website is used to compete with Complainant in a manner that is disruptive and done for the purpose of profiting from the creation of confusion regarding Complainant’s association with the domain name.
The Panel finds this evidence sufficient to show that Respondent is competing with Complainant, it therefore finds that Respondent uses the <juniperwebs.com> domain name in bad faith according to Policy ¶ 4(b)(iii) and/or Policy ¶ 4(b)(iv). See DatingDirect.com Ltd. v. Aston, FA 593977 (Forum Dec. 28, 2005) ("Respondent is appropriating Complainant's mark to divert Complainant's customers to Respondent's competing business. The Panel finds this diversion is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii)."); see also CAN Financial Corporation v. William Thomson / CAN Insurance, FA1401001541484 (Forum February 28, 2014) (finding that the respondent had engaged in bad faith under Policy ¶ 4(b)(iv), by using a confusingly similar domain name to attract Internet users to its own website where it sold competing insurance services).
The Panel further finds that Respondent registered the disputed domain name in bad faith, because at that time Respondent had knowledge of JUNIPER and the kind of business it was known and used for.
A number of facts point to that conclusion, including: a) Complainant had a valid national trademark registration in India, b) Respondent and Complainant are both offering Internet related services, c) Respondent had previously - although still long after Complainant started to offer its services also at the Indian market - registered and used another domain name based on the JUNIPER trademark, d) Respondent's explanation of the meaning of the word "juniper" has no importance when it comes to use the word for services closely related and associated with a competitor's trademark. See Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Forum Feb. 6, 2014) ("The Panel notes that although the UDRP does not recognize 'constructive notice' as sufficient grounds for finding Policy ¶ 4(a)(iii) bad faith, the Panel here finds actual knowledge through the name used for the domain and the use made of it.").
Reverse Domain Name Hijacking
Respondent may suggest that Complainant is guilty of Reverse Domain Name Hijacking, and Complainant has filed comments arguing against such claims. The Panel will therefore, in good order, comment on this topic as well.
Rules ¶ 15(e) provides that, if “after considering the submissions the Panel finds that the complaint was brought in bad faith, for example in an attempt at Reverse Domain Name Hijacking or was brought primarily to harass the domain-name holder, the Panel shall declare in its decision that the complaint was brought in bad faith and constitutes an abuse of the administrative proceeding”.
Reverse Domain Name Hijacking is defined under the UDRP Rules as “using the UDRP in bad faith to attempt to deprive a registered domain-name holder of a domain name”.
There is no evidence of harassment from Complainant, and the accusations and presumptions filed against Respondent are well within the scope of what the Panel finds acceptable from a trademark owner who discovers a domain name that may infringe its trademark rights.
The Panel therefore states that this is not a case of Reverse Domain Name Hijacking.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is ordered that the <juniperwebs.com> domain name be TRANSFERRED from Respondent to Complainant.
Petter Rindforth, Panelist
Dated: December 26, 2016
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